[gnso-rpm-wg] TMCH review objectives
Greg Shatan
gregshatanipc at gmail.com
Tue Sep 27 15:18:56 UTC 2016
I take from this the following:
- The TMCH database is NOT publicly available, in spite of claims to the
contrary. A policy decision was made NOT to make the TMCH database
publicly available, to avoid gaming and targeting of trademark owners. If
it is "publicly available" through some channels, these are not authorized
sources. It's reasonable to assume that these are either leaked or reverse
engineered. I'm not sure what the "evil source" is -- there may be
multiple evil sources.
- The DNL List, containing only the DNL field of the the TMCH database,
is made available to New gTLD Registries, who are required to have it and
update it daily.
- The sole purpose the DNL List is given to Registries is so they can
check whether a requested domain name matches a domain name label of a
pre-registered mark during the Trademark Claims Period. Any other use
would be an unauthorized use.
- Neither the TMCH database or the DNL List is made available to
Registrars. If a Registrar has either one of these, it has come from a
source not authorized to share it (either a Registry which received it
legally, or a third party who reverse engineered it) or the Registrar
reverse engineered it. In either case, a Registrar is not authorized to
either to have or to use the TMCH database or the DNL List.
- A Registry using the DNL list in order to set differentiated wholesale
prices for particular domains and target particular trademark owners during
the Sunrise Period (or for that matter during GA or any other period) is
making an unauthorized and unintended use of the DNL list. J Scott has
called this a "bad faith" use and I am inclined to agree, especially since
it begins with "unclean hands." (Note: this is a different issue from a
Registry setting a single high price for all trademark owners during
Sunrise (or GA, etc.) This is also a problematic practice but not the one
being discussed.)
- Registrars probably don't need the DNL List, since they can key retail
prices off the wholesale prices (and each Registrar is free to decide their
markup over the wholesale price) and can use "premium" lists set by the
registries. However, if a Registrar has the DNL list (which they
shouldn't) and uses it to set further differentiated prices for particular
domains, that would be an unauthorized use of the DNL list. That would
also be a "bad faith" use of the data, especially since the Registrar isn't
even supposed to have the data.
These practices may violate both the law and ICANN policy. On the legal
front, these may be violations of antitrust/competition laws, either under
a price discrimination theory or under a wrongful exercise of monopoly
power theory. Anti-price-gouging laws could also be implicated here. I
have not conducted an analysis of these points, but it would be good to do
so. (Similar issues may arise with across-the-board exorbitant prices in
Sunrise Periods.) The possession and use of the DNL List for anything
other than its intended purpose by its intended recipient could also
violate data protection laws, and could be violations of the terms under
which the DNL List is distributed.
On the policy front, these activities could be violations of the ICANN
policies relating to the creation and purpose of the TMCH database and the
Sunrise Periods. These could be more granular violations of particular
policy points and/or a violation of the entire purpose of these policies.
On the latter point, these polices are *Rights Protection Mechanisms*.
They were set up to protect the rights of trademark holders. They were
certainly not set up to use those rights to victimize trademark owners, by
singling them out and targeting them with exorbitant pricing schemes.
These pricing schemes (whether differentiated or across-the-board) make a
mockery of these rights protection mechanisms. Instead, they become
"rights detection mechanisms," allowing those unfortunately detected to be
charged extra-high prices solely based on their identity.
On a going-forward basis, we should make absolutely certain that (1) any
use of the DNL List (or the TMCH database) by a Registry for any other
purpose than sending Claims Notices is strictly prohibited and a violation
of applicable terms and contracts; (2) any use or possession of the DNL
List (or the TMCH database) by anyone other than a Registry is strictly
prohibited and a violation of applicable terms and contracts (if these
parties are subject to terms and/or contracts with ICANN).
Greg
On Tue, Sep 27, 2016 at 1:12 AM, Mary Wong <mary.wong at icann.org> wrote:
> Dear all, in response to Paul’s request, here is some information that we
> hope is helpful.
>
>
>
> First, the TMCH Technical Requirements and Functional Specifications have
> certain criteria and requirements for Registries in terms of the data they
> can fetch from the TMCH (the Technical Requirements can be found at
> https://newgtlds.icann.org/en/about/trademark-clearinghouse/
> rpm-requirements-14may14-en.pdf and the Functional Specifications at
> http://tools.ietf.org/html/draft-lozano-tmch-func-spec). For example:
>
>
>
> · REQUIREMENT - Registries must refresh the latest version of the
> SMD Revocation List at least once every 24 hours.
>
>
>
> NOTES:
>
> - The SMD (Signed Mark Data) Revocation List is the list of SMDs
> that have been revoked, maintained by the TMCH database. It contains all
> the revoked SMDs present in the TMCH database at the date and time it is
> generated. The SMD Revocation List is used during the Sunrise Period to
> validate SMDs received. During the Sunrise Period the Registry fetches the
> most recent SMD Revocation List from the TMCH database at regular intervals.
>
> - As noted during the Sunrise Overview WG discussion a couple of
> weeks ago, after a successful registration of a mark, the TMCH validator
> returns an SMD File to the TM holder. A SMD is a cryptographically signed
> token issued by the TMCH validator to the TM holder, to be used in the
> Sunrise Period to apply for a domain name matching a domain name label of a
> mark that has been pre-registered with the TMCH.
>
>
>
>
>
> · REQUIREMENT - Registries must download and refresh the latest
> version of the DNL List at least once every 24 hours.
>
>
>
> NOTES:
>
> - The DNL List contains every Domain Name Label (DNL) that
> matches a pre-registered mark present in the TMCH database at the date and
> time it is generated. The list is maintained by the TMCH database.
> Registries use the DNL List during the Trademark Claims Period to check
> whether a requested domain name matches a domain name label of a
> pre-registered mark.
>
>
>
> Secondly, the TMCH provides public monthly reports on TMCH trademark
> validation and dispute resolution activity, which are posted by ICANN here:
> https://newgtlds.icann.org/en/about/trademark-clearinghouse/
> registries-registrars/reports.
>
>
>
> Thirdly, the TMCH publishes regularly on its own website statistics about
> TMCH records, including number of marks submitted and number of Claims
> Notices issued; for example: http://www.trademark-
> clearinghouse.com/content/tmch-stats-april-20th.
>
>
>
> Finally, ICANN maintains a page containing the dates of all the Sunrise,
> Claims and related pre-launch RPMs offered by each New gTLD registry
> operator: https://newgtlds.icann.org/en/program-status/sunrise-claims-
> periods.
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
> Mary Wong
>
> Senior Policy Director
>
> Internet Corporation for Assigned Names and Numbers (ICANN)
>
> Email: mary.wong at icann.org
>
> Telephone: +1-603-5744889
>
>
>
>
>
>
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of "Paul at law.es ZIMBRA"
> <paul at law.es>
> *Date: *Monday, September 26, 2016 at 16:39
> *To: *"J. Scott Evans" <jsevans at adobe.com>
> *Cc: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] TMCH review objectives
>
>
>
> I apologize for the name error.
>
>
>
> As for use of data, I believe the same data is publicly available from any
> number of non-TMCH data. In that regard can staff please publish the data
> points that TMCH does publish to registries?
>
> Paul Keating
>
>
> On 26 Sep 2016, at 11:54 PM, J. Scott Evans <jsevans at adobe.com> wrote:
>
> Paul:
>
>
>
> First, we can agree to disagree. Also, my name is “J. Scott” (kind of my
> trademark) :-).
>
>
>
> Second, I am not talking about regulating a price. However, I do think
> pricing is relevant if the “data” is being used for a purpose (targeting
> trademarks for increased pricing) for which it was not intended and that is
> against the interest of the parties who the TMCH was designed to assist in
> handling the explosion of new gTLDs.
>
>
>
> J. Scott
>
> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright,
> Domains & Marketing **|*
>
> *Adobe *
>
> 345 Park Avenue
>
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com
>
> www.adobe.c[adobe.c]
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=0wZ3PX9qW61FgYqX24S9mAjNh5ojS5z2k3Fdl9M3huE&e=>
> om
>
>
>
>
>
>
>
> *From: *"Paul at law.es ZIMBRA" <paul at law.es>
> *Date: *Monday, September 26, 2016 at 1:22 PM
> *To: *"J. Scott Evans" <jsevans at adobe.com>
> *Cc: *Phil Corwin <psc at vlaw-dc.com>, Rebecca Tushnet <
> rlt26 at law.georgetown.edu>, "Silver, Bradley" <
> Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org" <
> gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] TMCH review objectives
>
>
>
> Scott,
>
>
>
> I strongly disagree.
>
>
>
> First I don't think it is bad faith and certainly not per se so as to
> warrant a global pricing restriction.
>
>
>
> The fact that there are potential buyers who may value a domain at a
> higher price is nothing but applying traditional market principles applied
> in virtually every other form of business. Domains are not utilities to be
> regulated in such manner. Nor do I see any basis to guaranty pricing for
> the benefit of trademark holders.
>
>
>
> Second, given that the same "TMCH data" is publicly available I don't
> understand the basis for focusing on TMCH as the evil source.
>
> Paul Keating
>
>
> On 26 Sep 2016, at 9:26 PM, J. Scott Evans <jsevans at adobe.com> wrote:
>
> Paul:
>
>
>
> Respectfully, I think you are missing some of the point here. I agree the
> market should operate as a free market. However, using the data in the TMCH
> to create lists of “premium” domains in the hope of having trademark owners
> pay exorbitant prices to acquire their marks is a bad faith practice that
> should be halted.
>
>
>
> J Scott
>
>
>
> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright,
> Domains & Marketing **|*
>
> *Adobe *
>
> 345 Park Avenue
>
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com
>
> www.adobe.c[adobe.c]
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.adobe.c&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=0wZ3PX9qW61FgYqX24S9mAjNh5ojS5z2k3Fdl9M3huE&e=>
> om
>
>
>
>
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Paul Keating <
> Paul at law.es>
> *Date: *Friday, September 23, 2016 at 9:04 AM
> *To: *Phil Corwin <psc at vlaw-dc.com>, Rebecca Tushnet <
> rlt26 at law.georgetown.edu>, "Silver, Bradley" <
> Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org" <
> gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] TMCH review objectives
>
>
>
> Phil,
>
>
>
> In furtherance to my last email responding to Mr. Levy, even an
> unreasonably priced domain is not infringing. It is important that we not
> mix up the concepts at issue. We are discussing both “preventative rights:
> and “curative rights”. The preventative rights mechanism should be
> severely limited because it acts as a restraint of market tendencies in the
> absence of actual infringement. Imposing preventative measures is akin to
> imposing a “prior restraint” which (certainly in the area of speech) is
> disfavored as a matter of public policy. The curative rights mechanism is
> the 2nd tool which permits rights holders to rectify an infringement that
> has actually occurred.
>
>
>
> Rights holders already have the ability to pursue legal claims against a
> registry who is intentionally targeting them by restricting access to
> domains other than by way of exorbitant pricing. The hurdles that the
> rights holders must overcome to succeed on such claims are understandably
> high – just as they are with any other claimant faced with a similar
> situation in a non-domain-related situation. However, such is life. It is
> not our place to alter the legal environment and create contractually-based
> claims that do not already exist in the law.
>
>
>
> I believe this was the import of the comment made during the last call
> asking to differentiate economic costs from “rights”.
>
>
>
> Sincerely,
>
> Paul Raynor Keating, Esq.
>
> Law.es[law.es]
> <https://urldefense.proofpoint.com/v2/url?u=http-3A__law.es_&d=DQMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=KIFna-qoWWOSGEvjDtb1t_47kx-6hWlYcVZJcs1n2iE&s=P_8OUyIYYwMESIUb0Sn5KIoY-pOZzog05pJ4uBUZ5JU&e=>
>
> Tel. +34 93 368 0247 (Spain)
>
> Tel. +44.7531.400.177 (UK)
>
> *Tel. +1.415.937.0846 <%2B1.415.937.0846> (US)*
>
> Fax. (Europe) +34 93 396 0810
>
> Fax. (US)(415) 358.4450
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> Skype: Prk-Spain
>
> email: Paul at law.es
>
>
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> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin <
> psc at vlaw-dc.com>
> *Date: *Friday, September 23, 2016 at 5:39 PM
> *To: *Rebecca Tushnet <rlt26 at law.georgetown.edu>, "Silver, Bradley" <
> Bradley.Silver at timewarner.com>, "gnso-rpm-wg at icann.org" <
> gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] TMCH review objectives
>
>
>
> I believe I just addressed that question in the email I posted – if
> unreasonably high sunrise pricing deters a rights holder from registering a
> domain corresponding to a verified TM registered in the TMCH then it may
> be registered in the general availability period by an infringer, which in
> turn imposes a variety of costs on the TM owner (including those of
> bringing a subsequent URS, UDRP, or judicial action) and also creates the
> possibility of confusion and harm for the general public.
>
>
>
> This is not to say that all Premium pricing is unreasonable, as it is
> generally recognized that certain words and terms have inherent additional
> value in the DNS context – it really requires a case by case analysis.
>
>
>
> *Philip S. Corwin, Founding Principal*
>
> *Virtualaw LLC*
>
> *1155 F Street, NW*
>
> *Suite 1050*
>
> *Washington, DC 20004*
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> *202-559-8750 <202-559-8750>/Fax*
>
> *202-255-6172 <202-255-6172>/Cell*
>
>
>
> *Twitter: @VlawDC*
>
>
>
> *"Luck is the residue of design" -- Branch Rickey*
>
>
>
> *From:*gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Rebecca Tushnet
> *Sent:* Friday, September 23, 2016 11:10 AM
> *To:* Silver, Bradley; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] TMCH review objectives
>
>
>
> TMCH’s goal of “protection” against *what*, though? How does high
> pricing contribute to trademark infringement? High pricing may deter
> purchases of domain names, no doubt, but with what result for the system
> overall?
>
>
>
> Rebecca Tushnet
>
> Georgetown Law
>
> 703 593 6759
>
>
>
> *From:* Silver, Bradley [mailto:Bradley.Silver at timewarner.com
> <Bradley.Silver at timewarner.com>]
> *Sent:* Friday, September 23, 2016 11:00 AM
> *To:* Rebecca Tushnet; gnso-rpm-wg at icann.org
> *Subject:* RE: TMCH review objectives
>
>
>
> I would add that the question of pricing feeds into the concept of
> effectiveness, because if the TMCH is serving as a database for registries
> to target brand owners for higher pricing based on the value of their
> brands, then this is antithetical to the TMCH’s primary goal to provide
> protection for verified right holders.
>
>
>
> *From:*gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org
> <gnso-rpm-wg-bounces at icann.org>] *On Behalf Of *Rebecca Tushnet
> *Sent:* Friday, September 23, 2016 10:26 AM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* [gnso-rpm-wg] TMCH review objectives
>
>
>
> Hello, all. On the last WG call, concerns about pricing of domain names
> during the Sunrise Period arose. This led to a question of whether pricing
> is within the remit of this WG – and the broader question of what the
> purpose of our TMCH review is. There seemed to be a desire to focus on the
> TMCH’s effectiveness. The predicate question, then, is: effectiveness at
> what? Here are some suggestions for discussion: (1) minimizing the cost of
> operating the system for all concerned; (2) minimizing the number of
> actions that ultimately need to be brought against infringing registrants;
> (3) minimizing the number of noninfringing registrants whose legitimate
> uses are blocked or deterred. If the system is reasonably balancing those
> objectives, I suggest, then it is effective; potential changes should be
> directly related to improving performance on one or more of these metrics
> without unduly hampering the others.
>
>
>
> Yours,
>
> Rebecca Tushnet
>
>
>
> Rebecca Tushnet
>
> Georgetown Law
>
> 703 593 6759
>
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